Passionate about IP! Since June 2003 the IPKat has covered copyright, patent, trade mark, info-tech, privacy and confidentiality issues from a mainly UK and European perspective. The team is Eleonora Rosati, Annsley Merelle Ward, Neil J. Wilkof, and Merpel. Nicola Searle is currently on sabbatical. Read, post comments and participate! E-mail the Kats here

The team is joined by GuestKats Mirko Brüß, Rosie Burbidge, Nedim Malovic, Frantzeska Papadopolou, Mathilde Pavis, and Eibhlin Vardy

Saturday, 31 December 2016

The last Land Rover Defender rolled off the production line in January 2016, after almost 70 years it had been the longest-running production car in the world. As Mr Justice Nugee put it the Defender is a "very well-known, if not indeed iconic, vehicle". A replacement model is being developed and its memory will live on... not least as a trade mark.

Jaguar has two trade marks for DEFENDER which protect it in the UK:

a UK mark filed in 1989 for "motor land vehicles and parts and fittings therefor; all included in class 12" and;

It was therefore far from thrilled to discover a Canadian company, Bombardier, marketing a "fun, recreational off roader" (but not road-legal) "side-by-side" vehicle under the name Defender.

What happened?

Jaguar sued for trade mark infringement pleading both double identity and likelihood of confusion. The defendant entered a Defence for the likelihood of confusion claim but not the double identity claim. It then sought to amend its Defence to cover the double identity claim and add a counterclaim for partial revocation on the basis of non-use and/or bad faith.

This judgment (not yet on Bailii) concerns Jaguar's application for summary judgment and Bombardier's application to amend its Defence and add a counterclaim.

Although the summary judgment claim was for infringement, Bombardier accepted that unless it could partially revoke the mark it did not have a defence to the double identity claim. This meant that the hearing focused on the circumstances in which partial revocation is possible in the UK and EU.

The Sagrada Familia has plenty of faith

Partial revocation for non-use

Bombardier argued that Jaguar had registered the DEFENDER mark for "motor land vehicles" but had only used the mark for part of the class. Because the EU mark was less than five years old (so could not be revoked for non-use) and because it was a summary judgment application, the judge did not consider this ground.

Partial revocation on the grounds that the application was made in bad faith

As George Michael might have said about Sections 3(6), 47(1) and 47(5) of Trade Marks Act 1994 and , "you've gotta have faith when making your trade mark application". (see also articles 52(1)(b) and 52(3) of the Regulation).

However, unlike the Trade Marks Act 1994, the Regulation does not include a requirement that the applicant must be using or have a bona fide intention to use a trade mark. Therefore whilst an incorrect declaration regarding intention to use under section 32(3) Trade Marks Act 1994 may result in partial or even total invalidity of a UK mark there is no equivalent for EU marks.

Bombardier argued that Jaguar Land Rover had no intention to use the term DEFENDER in relation to any other land vehicle, motor vehicle etc than the iconic Defender series which they characterised as a single car product whose essential features have remained the same since 1948 and consequently the EU application was made in bad faith. This led the court to an interesting consideration of whether an EU trade mark is liable to be declared invalid for bad faith where an applicant had no intention of using it for the full specification at the time of registration.

Nugee J referred to various comments from the English judiciary including Jacob J (as he then was) in Laboratoire De La Mer Trade Marks that "there is simply no deterrent to applicants seeking very wide specifications of goods or services for CTMs - with all the greater potential for conflict that may give rise to" and "it seems bizarre to allow a man to register a mark when he has no intention whatever of using it" at para 19.

Cats can defend you in the Underground

However, because this concerned interpretation of the Regulation it was a matter for EU rather than UK judges to determine. There was no relevant authority from the Court of Justice but the General Court had considered the issue in Psytech which Nugee J summarised as "a decision in principle that the law does not provide a basis to find that the size of the list of goods and services amounts to bad faith".

Mr Justice Nugee concluded that decisions of the General Court are binding on the English High Court by virtue of Section 3(1) and Schedule 1 of the European Communities Act 1972 and Article 19(1) of the Treaty on the European Union [38].

Is a broad list of goods and services in an EU trade mark application bad faith?

Although Demon Ale and Internetportal were considered, the facts here were very different. In those earlier cases, the applicants in question had no intention of using the mark for, respectively, beer and safety belts. What Bombardier was effectively saying was that that Jaguar Land Rover had not intention to use DEFENDER for the entire range of goods covered by the application.

Following his review of the legislation and authorities, Nugee J concluded that "neither the Regulation nor the case law provides a basis that would enable the court to find that there is bad faith in view of the size of the list of goods and services in the application".

As the application for partial revocation failed, there was no defence to the double identity infringement claim and the judge gave summary judgment on the EU trade mark infringement claim.

That's not a car!
The Land Rover High Capacity Pick up in action

Was the EU application for DEFENDER made in bad faith?

You might think that was the end of the matter. However, in view of the "expressions of disquiet" by some English judges on the issue Nugee J went on to consider what bad faith meant in an EU trade mark context and whether Jaguar Land Rover might have applied for its mark in bad faith.

In Trillium at [11], the Cancellation Division helpfully identified bad faith as "the opposite of good faith". They went on to note that this "generally impl[ies] or involv[es], but [is] not limited to, actual or constructive fraud, or a design to mislead or deceive another, or any other sinister motive".

Although not limited to these categories the judge accepted that bad faith is a serious allegation and one which requires facts to establish. In this instance Bombardier had failed to suggest an alternative narrower specification which Jaguar Land Rover could have used instead. In oral argument it was suggested that the specification could be limited to "motor cars, automobiles, cars" (i.e. class 120199).

The judge disagreed. The Defender series includes professional vehicles made to bespoke specifications including e.g. a high capacity pick up which Nugee J noted is clearly not a "car". The judge summarised the situation as follows:

This means that the defendant is seeking to allege that the claimant has acted in bad faith in effect by applying for too broad a specification, but has not successfully identified any narrower specification which the claimant should have applied for instead, the only suggestion being one which seems to be manifestly unsustainable.

What does this mean?

It may be possible to argue bad faith in relation to an over broad specification in the future but you need to be sure that the force facts are with you and identify a viable alternative specification.

Neil Wilkof ruminates about the interrogation held on 18 July 1573 by the Inquisition court to the famous Venetian Renaissance painter Veronese regarding the work first known as “The Last Supper” and later as “The Feast in the House of Levi”. A very interesting post regarding institutionalized censorship of printed works!

Andrew Sharples discusses the impact on European Patent Office practice regarding the European Commission Notice concerning the Directive 98/44/EC, in which was found that products (plants, animals and their parts) obtained by essentially biological processes are not patentable.

Guest Kat Rosie Burbidge discusses the case NVidia Corporation & Ors v Hardware Labs Performance Systems Inc, [2016] EWHC 3135 (Ch). The case deals with whether an English letter sent by a German company to a US company based on EU trademark infringement constitutes a groundless threat under the Trade Marks Act 1994.

The National Guild of Removers and Storers (or NGRS), a UK trade association, has been one of the main users of the new PCC (now IPEC) rules. There are eight decisions available on Bailii from 2010 to date. The latest case, The National Guild of Removers And Storers Ltd v Bee Moved Ltd & Ors [2016] EWHC 3192 (IPEC), is in a similar vein to the earlier decisions. It concerns third parties passing themselves off as being members of NGRS after their membership had ceased and the extent to which the defendants should be liable for advertisements on third party websites.The corporate defendant was Bee Moved Limited with the company directors added as alleged joint tortfeasors. Advert 1 - on the defendants' websiteThe first advert included a moving checklist which also appeared on the Defendant's website. The second bullet point was "use a removal company who is a member of the National Guild of Removers and Storers". The judge noted that this bullet points implies that the defendants are NGRS members because otherwise the advertisement would effectively be saying use a different company to us. Although the NGRS logo was not used, the judge did not consider that the public would notice its absence. Therefore the judge held that the moving checklist was an implied representation that the Defendant was a member of the Claimant and therefore damaged the Claimant's business and goodwill. The defendants conceded that if the First Defendant was liable for the advert, all of the defendants were.

Bee Moved by Bee Movie

Advert 2 - on reallymoving.comThis is a popular house moving website which the first defendant had joined in 2004 when it was an NGRS member. Four entries on the site identified BeeMoved as a "Member of NGRS". This statement was untrue from 21 March 2013 and was repeated on the BeeMoved website. Whilst the BeeMoved website was updated from 21 March 2013, the directory entries were not known to the company at that time and were not updated. When the Defendant became aware of the entries (following receipt of a letter before action) he contacted Really Moving who told him that they had a problem with their site crashing and reverting to an earlier version. The Defendant asked for this wording to be removed immediately which it was. The Claimant argued that as the wording originally came from the Defendants, they were liable for the use on Really Moving and a passage from Wadlow which noted that "it may be passing off for a Defendant knowingly to exploit an intending customer's own mistake or misconception, even if the Defendant was in no way responsible for the customer making that mistake" (para 5-26). Neither argument succeeded because (1) the Defendants could not control the actions of an Really Moving (an independent third party) and (2) it cannot be right that if Really Moving refused to remove the reference to NGRS, the Defendants could be liable forever; and (3) there was no evidence that anyone who contacted the First Defendant believed they were part of NGRS.If the First Defendant had been liable for the second advert, the judge noted that following Sea Shepherd v Fish & Fish [2015] UKSC 10, the individuals (i.e. the second and third defendants would have been liable as joint tortfeasors).

For IPKat readers who could not actually attend the annual office Christmas party at IP-World, Kat Friend Matthew James Elsmore of Aarhus

University in Denmark has provided his account of these imagined festivities.

Part I: An Apertif

Imagine you work at IP-World. Today is the annual office Christmas party (no, you cannot get out of it).

They are all going to be there: ‘The Big Four plus the one known simply as The One’; colloquially ‘the4plusthe1’. These admittedly rather descriptive if not clumsy designations comprise: Copyright Law, Design Law, Patent Law and Trademark Law, plus IP Sage. In light of Brexit, this year’s party is delayed and moved to Denmark for happiness reasons. You are politely informed the season of Danish julefrokost (literally ‘Christmas lunch’) is already underway in November and staggers on to January, and it is not unusual for people to partner several julefrokost during this festive phase. How liberating you think.

You stand at the entrance to the IP-World party (again): a delightful work canteen (again); a joyful night full of joy and joyfulness beckons (again). Hold on. Just hold on. You are in Denmark where cynicism is punishable by a smiling sentence. The party ‘shall be hygge’ the Danes say. How intriguing.

Hygge more or less means ‘comfy cosy fun’. Hygge is a theory and practice of what and how it is to function as a happy individual and society. It has a known role and appears simple and accessible, but is not easily defined with no literal translation in English. Hygge is so very Danish; it could be something that ‘insiders’ get, whereas ‘outsiders’ do not get it.

At the canteen door, two minutes to go. You shall get hygge. You can do it: recall moments of clarity when IP-World was a positive and uplifting experience. Promptly it is 6pm on the dot; you are in Denmark after all. You step inside the canteen. It is pitch black outside and not much brighter inside: minimalist invention and aesthetics accompany the barely audible pulse of seasonal sounds. So evidently understated (and you are so evidently the last person to arrive). So very Danish.

You immediately mark out the regulars, highly distinctive are they even with a dimmed and distant view. The Big Four have (clearly) been at it for a while with their respective gang in tow. It is well-known at IP-World that gangs of The Big Four members are loyal and they do not get each other; others don’t get it either. This has created misunderstanding inside and outside IP-World.

You scan the room: …Copyright Law (+CopyrightCrew) desperate to get mixing on the decks of steel in the DJ hot seat; Design Law (+DesignDetachment)looking, err, well …designed; Patent Law (+PatentPosse) merged in an almost unified swagger; Trademark Law (+TrademarkTroop) keeping itself to itself; and The One sitting solemnly, soaking it up. Business as usual. How comforting.

Some hours later...

The julefrokost continues its epic and gruelling format. It must be nearly done…

Next to you is Trademark Law, distinctly colourful and buoyant by now. Trademark Law has gone through several costumes matching the courses of the marathon meal (are you being served karrysild (‘curried herring’)?) Starting off the evening in an inconspicuous outfit straight from daily IP-World, into a ‘Friday-at-work’ dress code, then an exclusive tailored suit, Trademark Law has progressed to ‘Professional Brand-Man’: a sort of specialist superhero. This latest incarnation – as Trademark Law hurriedly assures you – is not meant to be sexist, and is meant to represent the self-proclaimed champion of market economies and companies and consumers and everyone and… everywhere. Blimey.

The current get-up is something of a look-a-like mishmash of A-list crusaders both real and functional fictional. Recognised trademarks plaster every inch of Trademark Law’s persona and it looks ready to open ‘The Inaugural Hungry Games’:

(As Trademark Lobby describes it) a futuristic blunderbuss of Binge Buy-day in a sort of Olympics Games 2.0 meets FRIFA World Cup meets SuperBowelSuperstore, all via an interactive live feed on 2FaceBook. Heavens above…

By now, TrademarkTroop have, err, trooped over and hover on the coattails of Trademark Law’s costume. You see ‘Captain-Consumer’ with ‘Private-Purchaser’ and ‘End-User’ in tow, ‘Captain-Company’ followed closely by ‘Brigadier-Big-Business’ and ‘Sergeant-Small-Business’, and ‘Major-General-Market’. Also, ‘TRIPs-Trooper’ with a barely visible upper and lower section of their uniform; it is fairly worn but looks like it says ‘rade’ (should that be ‘trade’?) and ‘development’.

Trademark and Troop are out-of-sync with their day-to-day existence. Far from their usual unfussy, unobtrusive selves they are noisy, attention-grabbing and incoherent. Is it the atmosphere, the mix music (thanks +CopyrightCrew), the hygge, or is it the snaps?

You have become wary of the innocuous enough looking snaps – sipping (and no longer gulping) the diminutive clear servings of this fiery ice-cold beverage and in respectful alignment to the toasts (13 and counting). A Swedish colleague eagerly informs those within earshot that the Danes love toasts almost as much as snaps, which they consume at Christmas and Easter, and midsummer, and midwinter, and um, well any ‘occasion’ really, like lunch.

Thinking about the transformation of Trademark Law, maybe The One’s trademark maxim is true: “All IPKats are grey in the dark”. The others of IP-World seem to be acting as their ‘normal’ selves, just louder and less sure of their footing. You spot the (we own the place) strut from Patent and Posse (still not unified). That’s certainly normal.

So what’s the ‘real’ Trademark Law? Is it this party behaviour or the ‘normal’ day-to-day behaviour? Perhaps there is more to Trademark Law than meets the eye. Or that Trademark and Troop are lightweights?

Well, the lighting has been dimmed right down, and you are almost in the dark now. You find a hygge chair and fall into it... Exhausted. Confused. Blurred vision.

Trademark Law comes over intently as if wanting to whisper something to you. Unsolicited comes the whisper bellow,
“The thing is that Trademark Law – that is to say me, my namesake, or is it yours truly? – uh, what we call Trademark Law and what we mean by uh, trademark law, is in fact a complex and vital and complicated and essential… err, thing.” Fairly articulate given the circumstances; but accurate?
Trademark Law continues:

“I am misunderstandedstood… It is misunderstood…”
(And motioning an arm to the Troops)

“We are misunderstood…”

The chorus of Troops nod, chorus-like, mouthing “It is true” in muted orchestra. You catch yourself nodding. It is almost as if they have all been here before. Have you been here before?

“I see…” you belatedly say still nodding (except you do not of course see (anything really)).

“Except you do not.”

“Uh… Excuse me?”

“No. You do not see. Not at all. How can you? To be perfectly honest with you – I think I can be – I am not really slur I understand it myself, or even understand it (i.e. myself). It is like I keep going round in circles chasing my own tail.”

The dark Danish night is taking its toll. The soul-searching continues.

“I am infused with genuine intellectual perplexities… you know like…, … and fraught with fragilities and conceptualities and... not enthused… But how could you possibly understand?

You deduce that was meant rhetorically.

(You deduced correctly.)

“How could anyone understand or know what it feels like to be Trademark Law? What does Patent Law know! Even The One has been ignoring me.”
With that, an awkward silence. Even the music had stopped.

You like Trademark Law. Always have done. But you do not seem to know Trademark Law. Trademark Law fell back into the adjacent chair; Resignation? Indignation?

This was getting heavy for your liking (where is hygge when you need it?). You spot The One heading to the balcony. Must be a good viewpoint up there, and a chance to get some fresh air. You head over.

Thursday, 29 December 2016

This guest post is provided by
Henry Liao, managing partner at Schinders Law Firm in Guangzhou, China and Mike
Mireles, former GuestKat.

On December 7, 2016, the Supreme
People’s Court of China (China’s highest court) invalidated a trademark registered
in China by Qiaodan Sports using the Chinese translation of famous basketball
player Michael Jordan’s surname “Jordan”, which is “乔丹” in Chinese.This very famous legal battle between Michael Jordan and Qiaodan Sports
has lasted for over four years and has resulted in a very interesting
decision.A decision that sends a
message in and outside China that trademark rights should be
respected in China.

Who is Michael Jordan?

In China in 2007, Qiaodon
Sports, a Chinese sport shoes manufacturer, applied for and registered “乔丹” in Class 28 for “sport
equipment, swimming pool, roller skates, [and] Christmas tree decoration” (the
“Trademark”).The Supreme People’s Court framed the issue
as whether the Trademark infringed Michael Jordan’s personality rights, or more
specifically, encroached on the economic value of Michael Jordan’s name.The Supreme People’s Court answered “yes” to
the issue and supported its analysis with two interesting theories: the
threshold of name-personality right protection and the fruit of poisonous tree
doctrine in trademark law.

-Threshold of Name-Personality Right Protection

Article 31 of the PRC
Trademark Law offers protection for “prior rights” against a later trademark
application. The Supreme People’s Court
deems any civil rights or interests enjoyed and accrued in accordance with the PRC
General Rule of Civil Law, the PRC Tort Law and other laws before the trademark
application shall fall under such “prior rights” of Article 31. Accordingly, name-personality rights, which is
vested by Article 99 of the PRC General Rule of Civil Law, shall override the
later application for a trademark which may impair the prior interest of a name-personality.

The Supreme People’s Court
further states that not just any name can enjoy Article 31 protection, and that
the following conditions must be met:

First, such name shall have a
considerable extent of popularity among the relevant public, and it shall refer
to a natural person.Notably, the name does
not necessarily mean the full name on your passport.It can be your pseudonym, stage name or even
a code name.

Second, the name shall have
been consistently used by the relevant public to refer to that person. The name does not have to exclusively belong
to the person, which is nearly impossible, nevertheless consistency in such use
requires a considerable length of time and a majority proportion of users among
the relevant public.

Evidence admitted in the case
since 1984 demonstrated that the Chinese media had been using “乔丹” to refer to the
legendary Michael Jordan. A large volume
of news reports, TV programs, and books were offered as evidence. Moreover, the applicant of the Trademark
admitted that the relevant public in China did use “乔丹” to name Michael Jordan. The Supreme People’s Court ruled that “乔丹”, the surname of Michael
Jordan, through many years of use, had become the customary appellation of the
high-profile Michael Jordan, and therefore falls under Article 31 protection.

-Fruit of Poisonous Tree Doctrine in Trademark Law

The applicant, Qiaodan Sports,
is a manufacturer of sport shoes established in the year of 2000. Admitted evidence demonstrated that its
business revenues for 2008-2011 were: RMB 518.48 million, 780.93 million,
2,860.99 million and 96.69 million, respectively. The Supreme People’s Court in 2002 found that
the applicant’s shoes were a well-known commodity, and its shoe box design was
special packaging of a well-known commodity. In June 2005, another trademark of the
applicant’s (see left),

One of Qiaodan Sports' Marks

which
is arguably similar to Nike’s (see below), was admitted as a well-known trademark in
sport shoes and apparel business by the PRC Trademark Office. Moreover, the applicant spent a lot of money
in product promotion, sponsoring sports games, and contributing to the public
welfare.

Notably, the Supreme People’s
Court found that the applicant had built up high public awareness and
reputation for the Trademark “乔丹”
through many years of operation, promotion and usage and that the relevant
public may be aware that the Trademark “乔丹” belongs to the applicant.However, the Supreme People’s Court still
determined that the relevant public may be misled into believing that there was
a certain relationship between the applicant and Michael Jordan.

One of Nike's Marks

The Supreme People’s Court
further found that the applicant knowingly registered the Trademark with the
intent to obtain a free ride, at the cost of encroaching on Michael Jordan’s
interest, which obviously violated the bona fide principle. The business success was not completely built
up through honest operation, and undeniably contributed to the relevant
public’s misunderstanding. Therefore,
The Supreme People’s Court held that the commercial success of the Trademark “乔丹” cannot and shall not
justify the applicant’s infringement on Michael Jordan’s name-personality
right.

The importance of this decision
is hard to understate.It sends a clear
message that intellectual property rights will be enforced in China—even with
substantial reliance interests by a Chinese company.

What
has been the most significant IP development in the UK this year?

From a policy
standpoint (and in the aftermath of the Brexit referendum) the answer is
probably the decision of UK Government to ratify the Unified Patent Court Agreement [here].

From a
practical perspective, however, also considering the increasing number of IP
infringements occurring online [this is a general trend: see here, at p 33] the
most significant domestic development in my opinion has been the judgment of
the Court of Appeal of England and Wales in Cartier[here, here, here],
which upheld the 2014 decision of Arnold J [here and here], and confirmed that owners of IP rights other than copyright can
seek injunctions against intermediaries to block access to website where
counterfeits are available.

The UK framework

UK Government implemented Article 8(3) of the
InfoSoc Directive into UK law by inserting s97A into the Copyright, Designs and
Patents Act 1988 (CDPA). Since the landmark decision of Arnold J in Newzbin 2[here] - the High Court of England and Wales has
ordered to block access to more than five hundred website [here], with
applications being filed by an increasingly diverse group of copyright owners,
including film studios, record labels record, publishers, and the Football
Association Premier League.

Unlike Article 8(3) of the InfoSoc Directive,
UK Government did not take any specific steps to transpose the third sentence
of Article 11 of the Enforcement Directive into its own national law.

In his
2009 decision in L’OréalArnold J concluded that, despite lack
of an express implementation, the High Court of England and Wales had power
under s37(1) of the Senior Courts Act 1981 (SCA, formerly known as the Supreme
Court Act 1981) to grant an injunction against an intermediary whose services
had been used by third parties to infringe an IP right (specifically: a
registered trade mark), to the extent that this is what the third sentence in
Article 11 of the Enforcement Directive requires.

In the aftermath of the UK decision in L’Oréal it remained however unclear
whether s37(1) SCA could be used to obtain a particular type of injunction, ie
an injunction against an intermediary to block access to a website where
content that infringes IP rights other than copyright can be found.

The Cartier
decisions

Possibly unsurprisingly (considering the
previous stance of Arnold J in L’Oréal),
the High Court of England and Wales (again, Arnold J) answered this question in
the affirmative in its 2014 decision in Cartier.

The "entirely
correct" [para 35] decision
of Arnold J was confirmed in appeal. The
Court of Appeal judgment contains however the dissent of Briggs LJ on the issue
of costs [since the Newzbin 2 decision, the practice in the
UK has been that rightholders bear the costs of application of an injunction,
while the ISPs to which the resulting injunction is addressed are responsible
for the implementation costs]. In
particular, the cost burden attributable to the implementation of a particular
blocking order should fall upon the rightholder making the application for it.

According to Briggs LJ, the reason is a domestic one. It is true that both the
Enforcement Directive and the InfoSoc directives provide that rightholders
should have the possibility of applying for an injunction against an
intermediary who either carries a third party's infringement of a protected
work in a network (in copyright cases) or whose services are being used by a
third party to infringe the rightholder's industrial property right (in
relation to trade marks). In both cases the conditions and modalities relating
to such injunctions, or the conditions and procedures relating to such
injunctions should be left to the national law of the Member States.

In the UK,
however, courts have jurisdiction as per s37(1) SCA, and this in substance
reflects an originally unfettered jurisdiction exercised by the Court of
Chancery on equitable principles. In the case of orders against innocent third
parties, the law has evolved so to ensure that a standard condition or
'modality' for the grant of an injunction is that the cost reasonably incurred
by the innocent respondent should be reimbursed by the applicant.

Ehm ...

A new article

Overall, the decisions of the High Court and the Court of Appeal of England and Wales in Cartier prompt a more thorough discussion around the role of intermediaries in an online context, including with regard to the effectiveness of remedies other than blocking orders and responsibility for bearing the costs of injunctions.

These issues are also currently under discussion at the EU level, both in the context of the EU Commission’s Digital Single Market Strategy (DSMS) as first unveiled in mid-2015 and case law of the Court of Justice of the European Union (CJEU).

If you are interested in all these topics, you
can find a more detailed discussion in this article [a pre-edited version is available on SSRN here] that I have derived from a
presentation at a recent conference held in Berlin, and that is going to be
published soon in GRUR International.

My contribution intends to provide an
overview of EU and UK experiences, and highlight certain trends that have
emerged from relevant case law. The article is composed of four parts. The
first part reviews CJEU case law in the area of intermediary injunctions, and
attempts to sum up the resulting key findings. The second part considers
relevant case law of UK courts in the area of blocking injunctions, and reviews
the approaches taken in respect of copyright and trade marks. The third part
discusses two principal issues emerged from the UK experience (the possible expansion
of blocking injunctions to different areas and intermediaries, and the
responsibility for the costs of injunctions), and considers whether – lacking
an unambiguous legislative framework – the parallel evolution at the CJEU level
may provide interpretative guidance. The fourth part highlights the terms of
the current EU policy debate: notwithstanding EU harmonization efforts in the
area of IP enforcement, the main finding is that there are significant gaps in
the resulting framework. This prompts the question whether, under the DSMS
umbrella, the EU should merely reform the current enforcement framework or,
together with this, also push the boundaries of harmonization further.

What are the main implications of the UK experience?

Overall, from the discussion of the UK
scenario, three main threads emerge.

First,
the availability of injunctions against intermediaries has proved a successful
remedy in the hands of rightholders. Even more so, according to Arnold J a
particular type of intermediary injunction, ie blocking injunctions, does not
current have any alternatives that are more effective. In this sense, the
relevance of two major developments is self-apparent: first, the CJEU
confirming the compatibility of this measure with the EU legal order (UPC Telekabel) and, secondly, the Court
of Appeal of England and Wales upholding the analysis of Arnold J that also
trade mark owners can avail themselves of this tool.

Secondly,
the UK experience demonstrates how – despite the EU harmonization efforts in
the area of IP enforcement – there remain significant lacunae in the resulting
framework (the issue of costs being an example), not to mention the fact that
certain key provisions, eg the third sentence in Article 11 of the Enforcement
Directive, have not been transposed fully or tout court into certain national IP regimes.

All
this leads to a third, final point: should the EU merely reform the existing EU
enforcement framework without pushing the boundaries of harmonization further,
or should – instead – more harmonization be provided?

Consultation after consultation, what does the future hold?

The DSMS debate

In
light of the responses to the consultation on the review of the enforcement
framework, as well as dissenting views on key aspects like costs, it is
submitted that this question should be addressed at the EU level, even before
any specific proposals are tabled [note that
a review of the IP enforcement framework is expected in the first half of 2017].

This
is particularly – albeit not only – so in a cross-border context. Although
cross-border injunctions are currently said to be more frequent in respect to
direct infringers rather than intermediaries, one of the principal obstacles
that rightholders have flagged is the diverging substantive scope of
injunctions in different Member States, as well as costs of injunctions. Intermediaries have instead expressed the view
that the implementation
of injunctions impacts on their operations primarily in terms of additional
costs, staff and technical infrastructure but might also result in adjusting
the service offer.

At the time of adopting the Enforcement
Directive, EU legislature stressed how disparities
between the systems of the Member States as regards the means of enforcing IP
rights are prejudicial to the proper functioning of the internal market, make
it impossible to ensure that IP rights enjoy an equivalent level of protection
throughout the EU, and also lead to a weakening of substantive IP law.

Overall, if the rationale underlying
the Enforcement Directive still holds valid today, then any reform discourse
should start from the awareness of how, despite harmonizing efforts, the
current legislative framework has significant shortcomings that courts –
whether at the EU or UK levels – have been called to overcome.

Länsförsäkringar is a Swedish insurance group that also operates a bank (Länsförsäkringar Bank). On 4 January 2008 it registered a device as EU mark among others for building construction, repair and maintenance, and installation services in Nice class 37. The mark was subsequently not used for these services.

Matek A/S is an Estonian company whose principal activity consists in manufacturing and assembling wooden houses (it does not get much more Swedish than that. Except that the houses could be for self-assembly). Matek started using in 2007, and secured registration as a mark in 2009, a very similar device to the Länsförsäkringar device for building materials in Nice class 19 (if you want to see how similar the devices are, check the IPKat post on the referal).

In a battle between the most Swedish name against the most Swedish activity, Länsförsäkringar sought to enjoin Matek from using its device, and was successful in first instance. However, on appeal the Svea hovrätt (Svea Court of Appeal, Sweden) set that decision aside. Whilst the appellate court considered that the logo used by Matek was similar to the EU trade mark registered by Länsförsäkringar, it held in contrast to the Stockholms tingsrätt (Stockholm District Court) that the examination of the similarity of the goods and services at issue had to be carried out on the basis not of the formal registration of that mark, but of the activity actually carried out by the proprietor (mind you, Länsförsäkringar's mark at that time was still within the 5-year grace period for use of Article 15(1) EU Trade Mark Regulation), and that led to the conclusion that the services and goods were dissimilar.

Länsförsäkringar's CEO

Länsförsäkringar appealed to the Högsta domstolen (Highest Damn Stool, Sweden), submitting that the assessment of the likelihood of confusion, within the meaning of Article 9(1)(b) of Regulation No 207/2009, must be based, during the period of five years following registration of an EU trade mark, solely on that registration and not on the actual use of the mark. The Supreme Court thought it necessary to ask the CJEU whether this view was correct (yes it is).

The CJEU, in a judgment handed down shortly before Christmas on 21 December 2016, held that indeed, during the five year grace period for use after registration of a EU mark, the likelihood of confusion has to be assessed based on the goods for which the mark is registered, not the goods it is actually used for. In view of Article 15(1) and Article 51 EU Trade Mark Regulation, this is really the only correct answer, as David Brophy and the sole commenter H Lee already noted in the IPKat post on the referal.

I would even argue that this is a (rare) case of "acte clair", i.e. the correct application of EU law is so obvious as to leave no scope for any reasonable doubt as to the manner in which the question raised is to be resolved, which makes a referal under Article 267(3) TFEU unnecessary (EU:C:1982:335 - CILFIT).

Anybody who thinks I've tried to mention Länsförsäkringar as often as possible in this post would be correct.

Wednesday, 28 December 2016

It is time for some seasonal trade mark fizz. This time around the question of consent to use a trade mark.This dispute has it all, polo players, champagne and contracts! It isMHCS Societe En Commandite Simple & Anor v Polistas Ltd & Ors [2016] EWHC 3114 (IPEC).It is a relatively complicated set of facts which boils down to the importance of clearly setting out the basis for an agreement.

Polistas became an official supplier to VCGC following a series of agreements which were entered into between it and the Claimant by email in each year from 2007 to 2010. Although the agreements varied slightly by year, broadly speaking the Claimant received some free and some heavily discounted branded polo shirts for each event in return for licensing the Veuve Clicquot brand for Polistas to sell the branded polo shirts.

It's hard to imagine polo causing any sort of trade mark dispute

The question was essentially how far did each licence go both in terms of time and the products in question. Other related issues included licence termination, passing off, quantum (liability and quantum were decided together), joint tortfeasorship and the absence of a limitation defence or challenge to validity.

The situation was somewhat complicated by the fact that many of the events in question took place nine years ago. Further, the second defendant and owner of the first defendant was a litigant in person. He was also the defendants' primary witness.

An intention to renounce the right to a trade mark will normally be gathered from an express statement.

Although consent may be inferred in some circumstances, an actual consent (not a deemed consent) be established.

In almost all cases, the trader must prove consent (rather than the trade mark owner being required to prove the absence of consent).

Consent cannot be inferred from a trade mark owner's silence, the absence of a warning on the goods or the goods being originally placed on the market without any further restriction on their onward sale.

Some seasonal veuve

In other words "the burden of proof is on the Defendants to unequivocally demonstrate consent" [25] (judge's emphasis).

What was the scope of the agreement?

Each year from 2007 to 2010, shortly before the VCGC, the parties entered into a new agreement by email on slightly different terms. Consequently, HHJ Clarke had no difficulty in concluding that she was considering a series of annually negotiated agreements rather than some other form of agreement as the defendants had suggested. Apart from the 2007 agreement, each agreement limited (1) production, promotion and sales of branded goods and (2) Polistas permission to advertise itself as an "official supplier" to the VCGC to the period "during the VCGC". The defendants suggested that this meant all year but the judge gave this suggestion short shrift and concluded that it meant the period of six weeks ending with the VCGC finals day.

This meant that the defendants had limited unequivocal consent to produce, promote and sell the branded goods and identifying themselves as an official supplier.

When were the agreements terminated?

Each of the agreements were terminable at will upon reasonable notice. Although the Claimants sent a very stern email in September 2011, the email was not sufficient to terminate as it was written on the assumption that the agreements had already terminated. However, the solicitor's letter of 11 June 2012 was sufficient to terminate each of the agreements with a termination date of 11 December 2012.

Not to be confused with...

Passing off?

Given her earlier findings on the limited consent, the judge wasted little time in concluding that other than in the six week period of the VCGC the defendants were also liable for passing off in 2008, 2009 and 2010.

the defendant must have assisted the commission of an act by the primary tortfeasor;

the assistance must have been pursuant to a common design on the part of the defendant and the primary tortfeasor that the act be committed; and,

the act must constitute a tort as against the claimant.

It was clear from the evidence that the director of the corporate defendants was the controlling mind and decision-maker. There was no evidence of any other individual being responsible for the companies' actions. Therefore Lord Neuberger's test was established.

Damages

As mentioned, this case was fairly unusual for being an IP case which considered both liability and quantum in the same hearing. The disclosure from the defendants was somewhat lacking in detail. As the judge put it "there is no axe in the world broad enough to calculate royalty as a percentage of profit share when neither the appropriate royalty rate nor the profits made are discernible from the evidence, so I must look for an alternative way to assess damages." Therefore, she considered quantum based on the value of the branded goods (as agreed between the parties at the relevant time). This led to a total damages award of £125,000.

The claimant was also entitled to an injunction to prevent further infringement and passing off.

The Fashion Law blogs the 2016 Out-of-Cycle Review of Notorious Market List published by the Office of the United States Trade Representative. The List “highlights prominent online and physical marketplaces that reportedly engage in and facilitate substantial copyright piracy and trademark counterfeiting”. Don't miss it!

Moving to copyright, Ben Challis summarizes in edifying and enjoyable detail on The 1709 Blog the highlights of 2016 in the copyright field, including GS Media case, Digital Single Market proposal, PETA’s copyright infringement suit, Google legal fight over for creating a digital library, and YouTube liability in Germany and the USA, among other topics.

CREATe announces a PhD Scholarship in collaboration with the international Law firm CMS. The PhD project involves legal aspects of data and digital innovation at the University of Glasgow. An internship at CMS is also part of the scholarship. Applications should be sent to Joy.Davidson@glasgow.ac.uk before 30 January 2017.

Moving to privacy matters, RE:MARKS ON TRADEMARK AND COPYRIGHT discusses the changes included in the leaked draft of the new Regulation that will replace the ePrivacy Directive. The changes provide for a monetary sanction of 4% of organizations’ worldwide annual revenues for non-compliance with the Directive as well as other provisions that will impact on organizations using tools for monitoring online activities.

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